Client Alert: 10 Guidelines to Properly Use and Protect Your Trademark Print PDF

For maximum legal benefits trademark owners should register their trademarks in all of the jurisdictions in which it will be used.

However, whether or not the trademark is registered, proper usage is the most important aspect of trademark protection. If a trademark is used properly, it can remain indefinitely as the exclusive property of its owner. Any rights which are acquired by registration are maintained through proper and continuous use of the trademark in commerce.

On the other hand, widespread misuse of the trademark can weaken its distinctiveness and make it difficult to enforce the exclusivity of the trademark. Misuse can also result in a trademark becoming generic. A generic trademark is the common descriptive name of the product the trademark identifies. When a trademark becomes generic, it can be used by anyone, and no longer distinguishes the trademark owner’s products from the products of other companies. The trademarks “escalator” and “aspirin” became generic names and now identify the product, not the owner.

To help protect the trademark, a trademark owner should observe several important guidelines in connection with all uses of the trademark, including for products, labels and collateral materials, advertising and promotional materials (including displays, signs, brochures, etc.), and websites and social media. These guidelines include:

1. Use the trademark as an adjective followed by the generic name of the product. A trademark is not a noun, but a proper adjective that modifies a noun. Nouns identify the actual product or service, as opposed to the source of the product or service. Further, don’t use a trademark notice symbol when referring to the company itself.
   1. Correct: We carry Kleenex® facial tissues in our stores.
   2. Incorrect: We carry Kleenex in our stores.
   3. Correct: Goya sells a variety of food products.
   4. Incorrect: Goya® sells a variety of food products.
2. Do not use the trademark as a verb. Verbs are action words that do not identify the source of the product or service.
   1. Correct: I performed a search on Google® to check the weather forecast.
   2. Incorrect: I Googled the weather forecast.[1]
3. Do not use the trademark in the possessive form (unless the trademark itself is in possessive form such as McDonald’s®).
   1. Correct: General Electric® appliances are reliable.
   2. Incorrect: General Electric’s® appliances are reliable.
4. If two trademarks appear together, always use the proper symbols every time the trademarks are shown.
   1. Correct: iRobot® Roomba® robotic vacuum cleaners are easy to use.
   2. Incorrect: iRobot Roomba® robotic vacuum cleaners are easy to use.
5. Do not use the trademark in the plural form (unless the trademark itself is in plural form such as Q-TIPS®):
   1. Correct: Our employees prefer iPhone® mobile phones.
   2. Incorrect: Our employees prefer iPhones.
6. Do not use the trademark in a descriptive sense because descriptive use of a trademark may erode brand name significance. For example, if a company owned a hand soap brand named FLOWERY MEADOW, it should not state that “our hand soap smells like a flowery meadow.”
7. Use the trademark consistently, as each deviation creates a new, different trademark. Do not change the form of the trademark, including by abbreviating, changing the spelling, or inserting or deleting hyphens. Any of these changes, no matter how minimal, could subject the trademark to risk of abandonment.
8. Use the trademark distinctively. A trademark should always be written in a manner that distinguishes it from the rest of the text. Examples include putting the trademark in all caps or in quotes, or in bold, underlined and/or italicized font. Except with respect to trademarks registered as stylized words, there is no specific requirement for a font size or style. However, it is good practice to present the symbol or legend conspicuously in relation to the applicable trademark to avoid an argument that you have not claimed rights to your trademark.
9. Use proper notice of a trademark in a conspicuous place immediately after the trademark. The most common is to put it in a superscript to the top right of the applicable trademark. Alternatively, you can place it in a legend at the bottom of the particular page on which the trademark appears (i.e. “ABC is a registered trademark of ABC Corporation”). Identify the trademark as registered or unregistered:
   1. ® For a trademark registered with the U.S. Patent and Trademark Office (and not when registered just in a state)
   2. ^TM For an unregistered trademark
   3. ^SM For an unregistered service mark[2]

Using these symbols puts the world on notice that you are claiming ownership of the trademark. Such notice may give you extra rights in the event of infringement and may even prevent infringement through notice to others of your ownership claims. Failure to use a registration notice on a registered trademark may result in lost benefits (e.g. the owner of the company may not be able to sue for past damages). Conversely, the use of a registration symbol on a trademark that is not registered may subject the user to fraud claims.

10. Also note that failure to police your trademarks may result in the loss of your trademark rights. One policing mechanism is to monitor the U.S. Patent and Trademark Office (USPTO) website for new applications that may be confusingly similar to your trademark. However, these records only show marks for which federal applications have been submitted. Accordingly, it is advisable to also perform internet searches to uncover the potential use of unregistered trademarks that, while not registered, may also be confusingly similar to your trademark. Obviously, this can be extremely time consuming. Therefore, most of our trademark clients utilize third-party watch services to police their marks. These services can monitor pending trademark applications in the USPTO, monitor online and other unregistered usage, and provide ongoing reports of potentially conflicting marks. A benefit of receiving early warning of conflicting marks is that you may get the third party to concede your rights before the third party has made a significant commitment to use or register its own trademark, and you may timely alert the trademark office of your senior rights. If conflicting marks are identified, you can enforce your trademark rights in various ways, including by sending a cease and desist letter, initiating an opposition or cancellation proceeding or filing an action in federal court. The decision on which approach to choose should be determined on a case-by-case basis through consultation with your legal counsel.

This article is provided for general reference. It does not constitute legal advice. Legal advice may be provided based only on specific facts. Please consult us before relying on any general information stated herein. We are happy to discuss any questions you may have regarding trademarks.

[1] Note, however, in 2017 a federal appeals court ruled that Google did not lose its trademark protection even though many people use the term as a verb for the act of searching the internet. But this one case does not remove the risk of using a mark as a verb in a generic sense.

[2] A “service mark” is for offering services, and a “trademark” is for offering goods. The term “trademark” though is often used loosely, as an umbrella term, to reference service marks too.